New Guidelines for Trademarking CBD Products in the US

In recent months CBD derived products have hit the market following several states legalizing cannabis and cannabis-related products. This has led to USPTO receiving a flood of new trademark applications from companies and businesses seeking to secure their Trademarks.

To break into the fast-growing market, businesses have to file their trademarks with the United States Patent and Trademark Office (USPTO).

Responding to the deluge of applications, USPTO issued a comprehensive guideline titled “Examination of marks for Cannabis and Cannabis-Related goods and services” that will affect all new and old trademark applications containing CBD and CBD derived products in the list of goods.

The Farm Bill 2018 was signed into law on December 20th, 2018. Amongst other regulations, it established a new Federal regulation for hemp cultivation, processing, and marketing. The new law legalized cannabis-derived products with less than 0.3% THC level on a dry weighing scale.

Cannabis has a long legal history in the US. It was first prohibited by Federal laws in 1937. In 1970 the Controlled Substances Act was enacted classifying Cannabis under Schedule 1 as a drug, ‘with a high potential for abuse and not acceptable for medical use,’ and this prohibited cannabis use for any purpose under Federal laws.

In 1973, Oregon became the first state to decriminalize cannabis. The big break for Cannabis came in 1996 when California became the first state to legalize the medical use of cannabis. Before Farm Bill 2018, In 2014 The Rohrabacher–Farr amendment was passed in the House and signed into law, it required annual renewal and prohibited the Justice Department from interfering with the implementation of state medical cannabis laws and that set into motion the advent of a new law.

In a statement following the signing of the Farm Bill 2018 which came into law on December 20, 2018, the FDA stated that it was aware of growing public interest in cannabis and cannabis-derived products. Based on this awareness FDA clarified its position as the Federal Food and drug regulatory body. It stated that it will treat products containing cannabis or cannabis-derived compounds as any other FDA regulated product, which means they will be classified as drugs and must meet the rules for registering drugs.

A threshold for manufacturing and distributing CBD products was established;

“Among other things, this new law changes certain federal authorities relating to the production and marketing of hemp, defined as cannabis (Cannabis sativa L.), and derivatives of cannabis with extremely low (less than 0.3 percent on a dry weight basis) concentrations of the psychoactive compound delta-9-tetrahydrocannabinol (THC).”

The new changes include removing hemp from CSA restricted substances, making it an eligible crop. The Law allows transportation of hemp and hemp products across state lines, as long as the hemp is produced under a license issued by the USDA. It removes cannabis plants and derivatives that contain less than 0.3 percent THC on a dry weight basis from controlled substances under Federal laws.

FDA’s caveat means that it will treat all CBD derived products as ‘drugs’ and will only license hemp products produced from oil, seeds, salt, derivative, mixture fiber, oil, or cake, or the sterilized seeds that contain less than 0.3% THC on the dry weight scale.

“the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.”

Under the new laws, USPTO will only register trademarks for hemp products that do not exceed the FDA’s 0.3% threshold of THC. These will not include CBD derived Foods, dietary supplements, pet treats or beverages. USPTO will no longer refuse the trademarking CBD products or hemp in the list of products.

USPTO in the new guidelines stated that it will examine new applications for trademarks and refuse registration for products that do not:

Comply with CSA and 2018 Farm Bill rules

Contravene the Definition of prohibited products under CSA which include, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana.

Applicants whose applications are refused will have the option to:

Request an amendment, i.e. amend the filing date to December 20, 2018, and or amend the identification of services to specify that the cannabis contained in the product is less than 0.3% THC on a dry weight basis.

Abandon the subject application and file a new one.

Respond to the reason for refusal by submitting evidence to the contrary within the meaning of the 2018 Farm Bill.

USPTO also made it clear following FDA’s statement that it won’t be registering marks for dietary supplements, pet treats, foods and beverages that contain CBD. This has the effect of putting on hold hundreds, probably thousands of applications that had been filed with the agency bringing uncertainties to businesses targeting to have a share of the 3-Billion-dollar industry.

Under these new guidelines, wherever the words ‘CBD’ and ‘Hemp’ appear in an application, the trademark examiner will inquire whether the application contravenes Federal laws and whether the product exceeds the CSA’s 0.3% threshold.

Applicants who filed their applications before December 20, 2018, have a reprieve as they can retrieve their application and amend the filing date to December 20, 2018, giving reasons for the change.

The new guidelines create a conundrum trademarking CBD products applications. This requires expert knowledge of both Federal and State laws. For expert advice on how to process your application, feel free to talk to us today and gain a better understanding of how to negotiate this tricky minefield.